Canada: A Year Of Significant Change For Canadian IP Law And Practice

Last Updated: January 16 2015
Article by Daniel Davies and Daniel Whalen

The wind of change blew through Canada's various intellectual property laws in 2014, changing many of their fundamental concepts and related practices. The following changes were the most noteworthy.

Trademarks Act

Canada's Trademarks Act was extensively amended twice in 2014, through Bill C-31 ("Economic Action Plan 2014 Act, No. 1") and Bill C-8 ("Combating Counterfeit Products Act").

Bill C-31 makes the most significant changes to the Trademarks Act in 50 years. The Bill brings the Act into conformity with several international trademark treaties, namely, the Madrid Protocol, the Nice Agreement and the Singapore Treaty. It involves changes to both the scope of trademark rights and the trademark application process. Some of the most significant changes include:

  • the definition of a "trademark" will be expanded to formally include, among other things, a colour per se, a sound, a scent or a texture;
  • applicants will no longer have to provide, prior to registration, a date of first use or a declaration of use in Canada or details of use or registration abroad;
  • Canada will adopt the Nice Classification system for goods and services, although the generally stricter Canadian description requirements will continue to apply, at least initially; and
  • the renewal period will be shortened to 10 years from 15 years.

Bill C-31 received royal assent on Jun. 19, 2014. The amendments are expected to come into force in late 2015 or early 2016, once the Trademarks Office makes the necessary practice and regulatory changes.

(For further information on Bill C-31 in relation to the Trademarks Act, please refer to our IP Update articles published on Mar. 31, 2014; Jun. 16, 2014; Jun. 20, 2014; and Dec. 1, 2014.)

Bill C-8 focuses on counterfeiting and the international trade in counterfeit goods. Among other changes, the Bill introduces:

  • new civil remedies against the possession of or dealing in counterfeit goods (including the manufacture, import or export);
  • criminal offences for possessing or dealing in goods or services in association with a trademark that is knowingly "identical to or cannot be distinguished in its essential aspects from, a trademark registered for such goods... [or] services"; and
  • new border measures to stop counterfeit products from entering Canada, including powers for customs authorities to detain counterfeit goods as well as the opportunity for right-holders to request assistance from customs authorities to facilitate monitoring and enforcement.

Bill C-8 received royal assent on Dec. 9, 2014. Its civil prohibitions and criminal offences came into force on that date and its new border provisions came into force on Jan. 1, 2015.

(For further information on Bill C-8 in relation to the Trademarks Act, please refer to our IP Update articles published on ">Mar. 25, 2013; Oct. 2, 2014; Dec. 10, 2014; and Jan. 6, 2015.)

Patent Act

The Patent Act was also amended in 2014, through Bill C-43 ("Economic Action Plan 2014 Act, No. 2"). The Bill amends the Patent Act to make it consistent with the international Patent Law Treaty, which aims to harmonize national patent formalities throughout the world. Some of the changes implemented by the Bill include:

  • introduction of a notice regime by which the Commissioner of Patents must notify an applicant of a missed due date before an application is deemed abandoned;
  • a mechanism to allow the addition of material contained in a priority application to a Canadian patent specification post-filing without affecting the filing date;
  • the right to restore priority claims if a request for priority was unintentionally omitted at first instance in certain circumstances;
  • andmore flexible filing requirements, allowing applicants to file a patent application by submitting a statement referring to a previously filed application, instead of submitting all or part of a specification or drawings.

Bill C-43 received royal assent on Dec. 16, 2014. It is unclear when the foregoing and other amendments introduced by the Bill will enter into force, which will depend on the accompanying amendments to the relevant regulations expected to be released in early 2015.

(For further information on Bill C-43 in relation to the Patent Act, please refer to our IP Update article published on Oct. 28, 2014.)

Canada-Europe "Patent Prosecution Highway" Pilot Program

Although not a legislative change, another significant patent-related development in 2014 was the inception of a bilateral Patent Prosecution Highway ("PPH") pilot program between the Canadian Intellectual Property Office ("CIPO") and the European Patent Office ("EPO"). Under this program, patent applicants whose claims have been found to be patentable by either CIPO or EPO may request accelerated processing of their corresponding applications that are pending before the other office. The program complements CIPO's other PPH partnerships with a number of intellectual property offices through the Global Patent Prosecution Highway pilot program, including the United States Patent and Trademark Office (USPTO), the Japanese Patent Office (JPO) and the Korean Intellectual Property Office (KIPO). Canada also has bilateral PPH agreements with several intellectual property offices including the German Patent and Trade Mark Office (DPMA) and the State Intellectual Property Office of the People's Republic of China (SIPO).

The CIPO-EPO PPH program was launched on Jan 6. 2015.

(For further information on the CIPO-EPO PPH, please refer to our IP Update article published on Sept. 25, 2014.)

Industrial Design Act

Bill C-43 also introduces a number of amendments to Canada's Industrial Design Act so as to bring it into conformity with the Hague Agreement Concerning the International Registration of Industrial Designs and to modernize some of the language in the Act. For instance, the Bill:

  • redefines the required content of an industrial design application, such as requiring a "representation of the design" rather than a "drawing or photograph of the design";
  • replaces the present requirement that the design not be "confounding" with a design already registered with a requirement that the design be "novel";
  • defines the term "priority date" and ties the grace period for pre-filing disclosures by the applicant to the priority date (rather than the Canadian filing date, as had been the case); and
  • extends the term of industrial design registrations from 10 years from the date of registration to the later of that date or 15 years from the filing date.

(For further information on Bill C-43 in relation to the Industrial Design Act, please refer to our IP Update article published on Oct. 28, 2014.)

Copyright Act

The Copyright Act was amended several times in 2014, through Bill C-8 (as discussed above with respect to the Trademarks Act) and remaining carry-over effects of the wide-ranging Copyright Modernization Act passed in 2012.

Among other changes to the Copyright Act, Bill C-8:

  • expands the definition of copyright infringement to include the export of pirated copies for specified commercial purposes;
  • adds possession and export of pirated copies for specified commercial purposes to the Act's criminal offence provisions; and
  • implements border measures to stop copyright-infringing products from entering Canada, as discussed above with respect to trademark-infringing products.

(For further information on Bill C-8 in relation to the Copyright Act, please refer to our IP Update articles published on Mar. 25, 2013 and Dec. 10, 2014.)

The Copyright Modernization Act was passed by Parliament in 2012, though not all of its provisions came into force at that time. The implementation of its last provisions to come into force – the so-called "Notice and Notice" regime – was announced on June 17, 2014. Under these provisions, when an Internet service provider ("ISP") or host receives proper notice of copyright infringement from a copyright owner, the ISP or host must forward the notice as soon as feasible to the customer(s) associated with the content, inform the copyright owner of that notice and retain records identifying the customer(s) for a period of six or twelve months.

This notice and notice regime came into force January 2, 2015.

(For further comments on the Copyright Modernization Act's notice and notice provisions, please refer to our IP Update article published on Jun. 24, 2014.)

For further information regarding the upcoming changes to the Trademarks Act, Patent Act, CIPO-EPO PPH, Industrial Design Act and the Copyright Act, please contact us.

The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.

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